Pierce-Arrow Society wins authorized motion to guard trademark “Pierce-Arrow”

Ben Williams December 23, 2019 26 No Comments

Pierce-Arrow Society wins legal action to protect trademark “Pierce-Arrow”

A brand new precedent set forth for automotive golf equipment

 

By Marc Hamburgel; PAS Director Emeritus

The U.S. Trademark Trial and Appeal Board dominated on August 12, 20I9 that the “Pierce-Arrow” trademark can’t be registered by an unrelated third social gathering for the manufacturing of a brand new vehicle. The resolution established a brand new precedent for cover of Collective Membership Marks.

This matter was first initiated on January 15, 2015 when Spintek Filtration, Inc., an organization in Los Alamitos, CA, filed software to register “Pierce-Arrow” as a trademark for cars … a limousine conversion based mostly on a Bentley chassis.

Then started an intense 55-month authorized motion undertaken by our Intellectual Property Attorney, Alan S. Cooper of the Washington, D.C. Law Firm Westerman, Hattori, Daniels and Adrian.

Mr. Cooper marshaled the in depth assets of the PAS to show that The Pierce-Arrow Society and the Pierce-Arrow Automobile are an lively, ongoing issue within the up to date automotive world and {that a} new car of the identical title would create confusion as to its supply, origin and relationship to the Pierce-Arrow Society and to present Pierce-Arrow cars.

Interestingly, on April 13 final yr, the TTAB chosen the case, The Pierce-Arrow Society v. Spintek Filtration, Inc. for argument earlier than a daylong convention of legislation college students on the U.S. Patent and Trademark Office. Mr. Cooper represented the PAS at that oral listening to.

This case has been the topic of commentary by the authorized trade press and by a number of legislation corporations individually. For a extra thorough clarification of the TTAB’s resolution, under are excerpts from a weblog put up written by Ira S. Sacks and Rachel B. Rudensky of the Akerman legislation agency.

In a latest resolution regarding the scope of safety for collective membership marks, the Trademark Trial and Appeal Board sustained The Pierce-Arrow SOCiety’s opposition to registration of PIERCE-ARROW for “automobiles” by Applicant Spintek Filtration, Inc. The Pierce-Arrow Society v. Spintek Filtration, Inc., Opposition No. 91224343 (August 12, 2019) [precedential]

A “collective membership” signifies that the person of the mark is a member of a selected group. Fraternities usually federally register their marks as collective membership marks. Collective membership marks are usually not logos or service marks within the extraordinary sense; they don’t seem to be utilized in enterprise or commerce, and they don’t point out industrial origin of products or companies. Registration of those marks fills the necessity of collective organizations who don’t use the symbols of their organizations on items or companies, however who nonetheless want to defend their marks from use by others.

Opposer The Pierce-Arrow Society (“Opposer’? is non-profit group, based in 1957 to protect the heritage of and foster curiosity in PIERCE-ARROW automobiles that had been produced and bought by The Pierce-Arrow Motor Car Company from 1901 to 1938. In their day, PIERCE-ARROW automobiles had been standing symbols, and had been considered being of the very best high quality.

Opposer owns a registered collective membership mark for PIERCE-ARROW SOCIETY, used for “indicating membership in a national organization whose aim is to foster and preserve interest in Pierce Arrow motor cars.” However, Opposer isn’t a authorized successor to The Pierce-Arrow Motor Company, nor did it purchase any of its property or any rights within the PIERCE-ARROW mark.

However, to protect its curiosity in its PIERCE-ARROW associated mark, Opposer opposed Spintek’s software to register PIERCEARROW for automobiles claiming: (1) false suggestion of a connection below Section 2( a) of the Lanham Act; and (2) chance of confusion below Section 2(d) of the Lanham Act. Section 2(d) proved to be the figuring out issue.

Section 2(d) – LIKELIHOOD OF CONFUSION

The Board defined that the chance of confusion evaluation involving a collective membership mark and a trademark isn’t based mostly on confusion as to the supply of the products or companies supplied by the group; quite, the difficulty is whether or not related customers are prone to imagine that the trademark proprietor’s items “emanate

from or are endorsed by or in another approach related to the collective group. ” Thus, the operative query was whether or not Applicant’s PIERCE-ARROW automobiles and Opposer’s group whose intention was to foster and protect curiosity in PIERCE-ARROW automobiles had been sufficiently associated that potential purchasers of Applicant’s automobiles could be prone to imagine that they’re sponsored by or ultimately affiliated with Opposer.

The Board simply discovered that the events’ marks had been extremely comparable in look, sound, connotation, and industrial impression.

The Board then targeted on the events’ items and companies, paying shut consideration to the exact phrases claimed within the respective registration and software. “Opposer’s collective membership mark identifies its organization’s focus on PIERCE ARROW automobiles. Applicant Spintek’s goods are PIERCE-ARROW automobiles.” The Board identified that Opposer’s registration was not restricted to used automobiles, or particularly, automobiles manufactured by The Pierce-Arrow Motor Car Company. Therefore, the Board held that Opposer’s registration might embody Applicant’s PIERCE-ARROW automobiles.

“To find a likelihood of confusion, the parties’ goods and services need not be similar or competitive. It is sufficient that they are related in some manner and/or that the conditions and activities surrounding the marketing of the cars and membership services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer or source.”

The Board subsequently concluded that customers are prone to assume a connection or affiliation with, or sponsorship by, the PierceArrow Society if the proposed PIERCE-ARROW mark is used for automobiles. Therefore, the Board sustained the opposition on the bottom of chance of confusion below Section 2(d).

This presents an uncommon however fascinating case of a well-known model’s fan group efficiently stopping another person from relaunching that lifeless model. In this case, the Board handed the Pierce-Arrow Society a win by decoding the declare of “foster[ing] and preserv[ing] interest in Pierce Arrow -motor cars,” as any Pierce-Arrow automobiles, quite than the vintage Pierce-Arrow automobiles that had been clearly initially meant. This case might enable different fan teams to protect the cache of their favourite lifeless luxurious manufacturers.

Pierce Arrow Society wins legal action to protect trademark “Pierce Arrow” - Pierce-Arrow Society wins authorized motion to guard trademark “Pierce-Arrow”

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